In an opposition proceeding before the TTAB, Royal Crown (RC) and Dr. Pepper/Seven Up sought to prevent registration of seventeen applications filed by Coca-Cola to register marks incorporating the term “ZERO,” including “SPRITE ZERO” and “COKE ZERO.”
Opposers argued that ZERO is a generic term for zero-calorie soft-drinks, sports drinks and energy drinks. In the alternative, they argued that ZERO is a merely descriptive term without secondary meaning, and thus could not be registered without a disclaimer of the applicant’s exclusive right to the term.
In response, Coca-Cola opposed RC’s registration of two marks incorporating the term ZERO on the ground that the marks were likely to cause confusion with Coca-Cola’s family of ZERO marks, and claimed that its own ZERO marks had acquired secondary meaning (i.e. that consumers had come to recognize the mark as an indicator of source).
The Board first had to determine whether the term ZERO was generic in the context of zero-calorie soft-drinks. The Board concluded that the relevant genus at issue was soft drinks, sports drinks and energy drinks. It then concluded that consumers of these goods did not understand the term ZERO to primarily refer to such drinks, despite submitted evidence of the existence of 27 third-party zero-calorie soft drinks, sports drinks and energy drinks with names incorporating ZERO. Thus, the Board held ZERO is not a generic term, but is merely descriptive of zero-calorie soft-drinks.
The burden fell on Coca-Cola to prove that the term ZERO had acquired distinctiveness based on Coca-Cola’s extensive use. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” Coca-Cola submitted evidence showing that it had spent over $150,000,000 advertising and promoting its ZERO family of products, had sales well over $1 billion, and had been the beneficiary of unsolicited media coverage of its product. In addition, Coca-Cola submitted an independent consumer survey showing that 61% of respondents associated the term ZERO with one company.
Opposers argued that Coca-Cola could not establish secondary meaning because its use of ZERO had not been substantially exclusive. The Board found that, other than RC’s use of DIET RITE PURE ZERO, the evidence of third-party use of ZERO for soft drinks was inconsequential. The Board ruled the “cumulative effect” of Coca-Cola’s use of ZERO for soft drinks was so extensive that it qualified as “substantially exclusive.” In light of Coca-Cola’s evidence of use, the Board concluded that Coca-Cola had acquired distinctiveness in the term ZERO when used as part of a mark for soft drinks, but not for energy drinks.
Finally, the Board considered whether RC’s marks using the term ZERO were likely to cause confusion as to the source of products bearing those marks. The Board found that the only mark in the Coca-Cola ZERO family that Coca-Cola used before RC’s filing dates for its own ZERO marks was SPRITE ZERO. As a result, Coca-Cola “had not established a family of marks indicating a single source of ZERO-formative soft drinks in the minds of the consuming public” at the time of RC’s filings. Thus, Coca-Cola failed to establish priority over RC in its likelihood of confusion claim, and therefore, could not prevail in its oppositions.
Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc. v. The Coca-Cola Company, Opposition No. 91184434 (TTAB May 23, 2016) [Non-Precedential].